“small, squat, smiley-faced, bowler hatted blimp” protected by the courts

On 28th May 2010, the High Court held that Qualtex Ltd, which threatened to manufacture and sell vacuum cleaners replicating Numatic International Ltd’s successful ‘Henry’ model, was guilty of the tort of passing off. The dispute arose in 2008, when Qualtex informed Numatic of its intentions to manufacture and sell replicas of the bowler-hatted, tub-style vacuum. Qualtex based its decision on the understanding that all relevant intellectual property rights (in the form of registered and unregistered design rights) associated with the model had expired.


The tort of passing off exists to prevent an individual from misrepresenting his goods or services as belonging to, or being associated with another person. A successful claim requires the plaintiff to establish that goodwill has attached to his product; that the defendant has lead the public to believe that his products belong to the plaintiff through misrepresentation; and that he has or is likely to suffer damage as a result of the misrepresentation. What makes this case remarkable is that the court was asked to consider whether sufficient reputation and goodwill existed in the shape or get-up of the product to warrant protection, even after registered design rights have expired.


Citing a newspaper article, which describes the Henry as a “small, squat, smiley-faced, bowler hated blimp on casters” and noting market research commissioned by Numatic, Mr Justice Floyd found that “[t]he public have been educated to recognise the overall shape combined with the black bowler hat as indicia of a genuine Henry.” This being the case, Qualtex’s defence that it had not intended to use the distinctive Henry “face” on the replica, and that it would use a different brand name to alert the public to the fact that the product was not a genuine Henry, were not held to be persuasive by the Court.


Further reading:

Numatic International ltd v Qualtex UK Ltd [2010] EWHC 1237 (Ch)
http://plc.practicallaw.com/3-502-8832
http://www.lawdit.co.uk/reading_room/room/view_article.asp?name=../articles/7216-Henry-has-his-day-in-court.htm

Nintendo DS ‘game copier’ chips fall foul of copyright law

The High Court in London has held that devices allowing users to run pirated games on Nintendo DS consoles are illegal in Britain. The storage devices, which slot into a Nintendo DS like a game card, contain either a built-in memory, or a slot for a micro-SD flash card. Using circuitry, software and data, the devices are able to circumvent the copy-right protection measures installed onto Nintendo consoles.

Games which have been illegally downloaded from the internet may then be stored on the memory card and played on the DS.

Finding against the defendants, Playable Ltd - a company which imports and sells the devices - and its sole director and share holder, Mr Wai Dat Chan, the Court held that they were guilty of circumventing copyright protection technology under s.296ZD of the Copyright, Designs and Patents Act. The Court was unwilling to accept the defence that the devices can also be used for lawful activities, such as playing home-made games. Even if this were the primary use, in order to enable such games to be played on the console, the device would still have to circumvent the effective technological measures (ETM) used by Nintendo.

The Judgment highlighted that HMRC and Trading Standards had seized over 165,000 game copiers intended for use by Playable Ltd. With devices available for as little as £10, and since each device is capable of storing multiple games (which would otherwise retail individually for as much as £20-£30 on release), the Court noted the “substantial” economic effect that the trading of these devices would have on Nintendo.



Sources:

http://www.guardian.co.uk/technology/gamesblog/2010/jul/28/games-controversy
http://www.bbc.co.uk/news/technology-10790835
Nintendo Co Ltd v Playables Ltd [2010] EWHC 1932 (Ch)

Google’s AdWords faces further scrutiny in the Paris Court of Appeal

Both LVMH Moet Hennessy Louis Vuitton and the internet search giant Google claimed victory last week in the latest of a series of challenges to Google’s AdWords business. On Tuesday 13 July the French Supreme Court (Cour de Cassation) referred a ruling in favour of the French luxury goods company back to the Court of Appeal.

The dispute involves Google’s paid referencing service, ‘AdWords’, which allows advertisers to bid for keywords- many of which are protected trademarks- used in Google’s search engine. When an internet user enters a keyword, advertisements known as “sponsored links” are shown in the top of the screen. Consequently, a search on a trademarked word could bring up a competitor’s product or - in theory – even direct the consumer to counterfeit products.

The Cour de Cassation’s judgment affirmed an earlier ruling by the European Court of Justice, which held that the practice of selling keywords associated with registered trademarks does not infringe trademark rights per se. Despite using its official blog to herald that ruling as a triumph for the free flow of information over the shackles of an overly coercive IP regime, the court made it clear that such advertising could constitute an infringement where it “does not enable an average internet user... to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark... or on the contrary, originate from a third party.” LVMH said that the Supreme Court’s recent decision “will enable the Paris Court of Appeals to rule on Google’s civil liability when using trademarks without the trademark owner's authorization." No date has been set for the forthcoming hearing.


Sources

http://googleblog.blogspot.com/2010/03/european-court-of-justice-rules-in.html

http://www.mediaweek.co.uk/news/1015878/Google-AdWords-held-liable-sale-trademarks/

http://sanfrancisco.bizjournals.com/sanfrancisco/stories/2010/07/12/daily10.html

ISPs take on the Digital Economy Act

BT and TalkTalk bosses call for judicial review of Digital Economy Act in High Court.

BT and TalkTalk, two of the leading UK Internet Service Providers (ISPs) stated that they will be “seeking clarity" from the High Court on the legality of the Digital Economy Bill’s provisions before spending tens of millions on implementing the system.

The current code of practice set out in the Digital Economy Act only applies to the larger ISPs, i.e. those with more than 400,000 subscribers, putting larger ISP’s at a disadvantage according to Andrew Heaney, the Executive Director at TalkTalk. Mr. Heaney stated

“It means we could have huge swathes of customers moving to smaller ISPs to avoid detection”.

TalkTalk chairman Charles Dunstone says

"The Digital Economy Act's measures will cost the UK hundreds of millions and many people believe they are unfair, unwarranted and won't work," "It’s no surprise that in Nick Clegg’s call for laws to repeal, this Act is top of the public’s ‘wish list’."

Digital Economy Act vs EU Law


BT and TalkTalk’s main argument lies with the European e-commerce directive, which states that ISPs are “mere conduits” of content and shouldn’t be held responsible for the traffic on their networks. The two companies will seek clarification if this European law conflicts with the newly introduced Act. In a statement to the BBC, the Coalition Government said

"We believe measures are consistent with EU legislation and that there are enough safeguards in place to protect the rights of consumers and ISPs and will continue to work on implementing them."

Privacy Rights Infringed?


Mr. Heaney (TalkTalk) also expressed concerns over users privacy rights claiming that the act may also be in contravention of the privacy and electronic communications directive. Charles Dunstone, TalkTalk Chariman, told the Times

'The Digital Economy Act's measures will cost the UK hundreds of millions, and many believe they are unfair, unwarranted and won't work'

he said.

"That’s why we need a judicial review by the High Court as quickly as possible before lots of money is spent on implementation."

ISPs vs the Creative Industries


The Digital Economy Bill has already been subjected to much criticism after being “rushed through” parliament earlier on in the year. Among its most controversial measures were proposals to disconnect persistent illegal file-sharers from the web and give copyright holders the power to block access to websites hosting illegal content. The BPI, which represents the UK's recorded music industry, has campaigned hard for the Digital Economy Act to act against file sharers. The Coalition Government have stated

"The Digital Economy Act sets out to protect our creative economy from the continued threat of online copyright infringement, which industry estimates costs the creative industries, including creators, £400m per year,".

Mr Heaney says

"It is outrageous that they are coming begging at our door but are not helping themselves,".

Ofcom have said that plans to disconnect users would not be implemented until 2011 at the earliest.

More Reading:

BBC News
The Times
The Guardian


Watch this space for updates.

Is it possible to trademark a smell?

Following the ECJ's ruling in the 2001 Ralf Sieckmann case, courts have continued to support the view that it is not possible to register smells or sounds as trademarks. A smell cannot be adequately graphically represented by a verbal description because it is too imprecise. Manufactured smells (which would include scents and perfumes) can give rise to intellectual property rights which will generally attach to the information describing the ingredients of / or formulae for the smells or to the processes of production (or both). This type of information has traditionally been protected by treating it as a trade secret.

By way of analogy, take for example the ingredients for Coca-Cola®. This information has always been guarded by the company as a trade secret and its disclosure to employees or third parties has always been under the form of non-disclosure agreements. Trade secrets are generally enforced by contract.

The advantage of holding a trade secret is that the intellectual property rights can exist indefinitely so long as you manage to keep it a secret. The trick is to make sure that you have sufficient contracts in place (whether with your employees or contract manufacturers or other third parties) to allow you to disclose freely the ingredients and means of production of your scents on a need to know basis. Any misuse or unauthorized disclosure of a trade secret by a contracted party would generally amount to a breach of contract and an actionable claim in the courts, giving the holder the right to an injunctive remedy (where available) and possible recovery of damages.


If you would like more information on this article or require assistance in the preparation of non-disclosure or employer/employee covenant terms to safe-guard this type of intellectual property, please contact Forde Campbell LLP.

British Government to Publish Details of I.T. Contracts starting July 2010

Cameron's bid to increase spending transparancy in Government has begun. July 2010 will see the introduction of online publications detailing all new central government ICT contracts together with all new central government tender documents for contracts over £10,000.

Later on in the year, new items of central government spending over £25,000 will also be made available online with UK international development spending over £25,000 and all new central government contracts to be published in full from January 2011.

Cameron has asked departments to take "immediate action" to ensure that the deadlines are met and that the information is usable by people regardless of computer specification.

Dear Secretary of State

Greater transparency across Government is at the heart of our shared commitment to enable the public to hold politicians and public bodies to account; to reduce the deficit and deliver better value for money in public spending; and to realise significant economic benefits by enabling businesses and non-profit organisations to build innovative applications and websites using public data.

The Government must set new standards for transparency, and our Coalition Programme for government sets out a number of specific commitments. The Government’s initial transparency commitments are set out below, alongside deadlines for publication. Limited exemptions on national security and personal privacy grounds will be permitted.

Central government spending transparency

• Historic COINS spending data to be published online in June 2010.
• All new central government ICT contracts to be published online from July 2010.
• All new central government tender documents for contracts over £10,000 to be published on a single website from September 2010, with this information to be made available to the public free of charge.
• New items of central government spending over £25,000 to be published online from November 2010.
• All new central government contracts to be published in full from January 2011.
• All UK international development spending over £25,000 to be published online from January 2011.

Local government spending transparency

• New items of local government spending over £500 to be published on a council-by-council basis from January 2011.
• New local government contracts and tender documents for expenditure over £500 to be published in full from January 2011.

Other key government datasets

• Crime data to be published at a level that allows the public to see what is happening on their streets from January 2011.
• Names, grades, job titles and annual pay rates for most Senior Civil Servants with salaries above £150,000 to be published in June 2010.
• Names, grades, job titles and annual pay rates for most Senior Civil Servants and NDPB officials with salaries higher than the lowest permissible in Pay Band 1 of the Senior Civil Service pay scale to be published from September 2010.
• Organograms for central government departments and agencies that include all staff positions to be published in a common format from October 2010.

Given the importance of this agenda, the Deputy Prime Minister and I would be grateful if departments would take immediate action to meet this timetable for data transparency, and to ensure that any data published is made available in an open format so that it can be re-used by third parties. From July 2010, government departments and agencies should ensure that any information published includes the underlying data in an open standardised format.

Of course, the release of the datasets specified in the Coalition Programme is just the beginning of the transparency process. In advance of introducing any necessary legislation to effect our Right to Data proposals, public requests to departments for the release of government datasets should be handled in line with the principles underpinning those proposals: a presumption in favour of transparency, with all published data licensed for free reuse.

To oversee the implementation of our transparency commitments, a Public Sector Transparency Board will be established in the Cabinet Office, which will be chaired by the Minister for the Cabinet Office Francis Maude. Board representation will include a mix of external experts and data users, and public sector data specialists; members will include Tom Steinberg, one of the UK’s leading experts on data transparency. The Board will provide support to departments as they deliver on the Government’s transparency commitments set out in this letter. The Board will also be responsible for setting open data standards across the public sector, publishing further datasets on the basis of public demand, and – in conjunction with the Ministry of Justice – will further develop the Right to Data and advise on its implementation.

I look forward to welcoming rapid progress on this agenda in the coming weeks.

I am copying this letter to Sir Gus O'Donnell.

Source

OFCOM Publishes Consultation Paper on Dealing with Online Copyright Infringement

by Rory Campbell

The Digital Economy Act 2010 gave Ofcom the responsibility of managing the controversial process of tackling copyright infringement via the internet.


The Act envisaged Ofcom having power to require ISPs to send warnings to subscribers infringing copyright. Failure to comply with a specific number of warnings would result in the identity of an infringing user being made available to copyright owners, who would then be able to take legal action against the infringing user.


The Act required Ofcom to draw up and enforce a code of practice describing how the system would operate, with the code being published by 8th January 2011. Ofcom published a draft code as a consultation on 1st June 2010, inviting responses by 30th July 2010. A copy of the code can be found here.


The consultation proposals include the following:

• Ofcom proposes that the code only covers larger ISPs, which Ofcom defines as fixed ISPs with more than 400,000 subscribers. This would include BT, Talk Talk, Virgin Media, Sky, Orange, O2 and Post Office. Small and medium sized ISPs would escape the remit of the code unless Ofcom receives evidence that subscribers to any such ISP are persistently infringing copyright.

• Ofcom acknowledges that it needs to create a proper system to check that any allegation against an alleged infringer is based on “credible evidence, gathered in a robust manner”. Any person accused of infringement will be able to appeal to an independent body, and Ofcom’s consultation proposes that any such person should be granted anonymity.

• The consultation proposes that once an ISP receives a copyright infringement report from a copyright owner, the ISP notifies the alleged infringer. The alleged infringer is given an easy to understand explanation of the allegations, and of the steps the subscriber can take to challenge the allegation – and to protect their network from being hijacked for the purposes of infringement.

• If an alleged infringer receives three notifications, their identity may be included in a copyright infringement list requested by the copyright owner. The copyright owner can then commence legal action against the alleged infringer.


Ofcom is clearly aware of the high temperature of the debate over the fairness of the Digital Economy Act: and it creates a future breathing space for itself by pointing out that enforcement under the Act needs to be one component in a broader approach to digital copyright infringement: “we note that [enforcement measures under the Act] were always expected to be complemented by a wider set of activity…including consumer education, the promotion of lawful alternative services and targeted legal action against serious offenders” (Ofcom consultation paragraph 1.9).


If you want legal advice on how the Digital Economy Act may affect you or your business, feel free to contact us at rory@fordelaw.com or on 028 44 33 00 23.

Forde Campbell LLP is a Northern Irish commercial law firm specializing in Media, IP and IT.